Traditional Knowledge and Patent Law

Let’s think about two related facets of patent law. One involves the degree of protection that should be given to “traditional knowledge.” For example, suppose that a remote tribe in New Guinea uses an herbal remedy that cures cancer. A drug firm in the U.S. learns about this and gets a patent on the cure. Is that patent valid? Probably yes, because unwritten practices do not count as prior art. Thus, the tribe (or its national government) is not entitled to anything. There are good reasons for this policy. First, there is an important social benefit in making local knowledge more widely available. Second, there would be considerable proof problems created (for the PTO and the courts) if unwritten practices were admissible.

Now consider what happens if a patent owner sues somebody for infringement and the defense is that they’ve been using the invention in question since before the patent came into effect. That “traditional knowledge” defense will fail. Proof problems can explain this in part, but it does seem unfair to say that practitioners of traditional arts can’t get any benefits from a patent and are liable for their continuing use. There is an exception with respect to business method patents, where prior use IS a defense (though one that is rarely invoked successfully). Why shouldn’t that be extended to all patents?

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Gerard Magliocca

Gerard N. Magliocca is the Samuel R. Rosen Professor at the Indiana University Robert H. McKinney School of Law. Professor Magliocca is the author of three books and over twenty articles on constitutional law and intellectual property. He received his undergraduate degree from Stanford, his law degree from Yale, and joined the faculty after two years as an attorney at Covington and Burling and one year as a law clerk for Judge Guido Calabresi on the United States Court of Appeals for the Second Circuit. Professor Magliocca has received the Best New Professor Award and the Black Cane (Most Outstanding Professor) from the student body, and in 2008 held the Fulbright-Dow Distinguished Research Chair of the Roosevelt Study Center in Middelburg, The Netherlands. He was elected to the American Law Institute (ALI) in 2013.

6 Responses

I think your hypo is somewhat incomplete. The traditional use in New Guinea isn’t prior art only because it does not occur in the United States, since there is no appearance that the traditional use was kept secret. The subsequent infringement, in contrast, must occur in the United States — presumably by a member of the tribe who has moved here. So this seems a criticism of the geographic limit on 102(b) public use prior art rather than the lack of a prior user defense.

“Thus, the tribe (or its national government) is not entitled to anything. There are good reasons for this policy. First, there is an important social benefit in making local knowledge more widely available.” — You’re saying that’s a good reason for the tribe or its national government not getting anything?

Note BTW how the incentive-to-invent argument in favor of granting patents fails here.

As to your larger question, you’re right, the defense should be extended to all patents. As for TJ’s assumption that the infringement would be by a “member of the tribe” who’s moved to the US, that seems unnecessary esp. since he’s pointed out that by hypothesis the traditional use wasn’t kept secret.

Well put, TJ. Plus, even if the traditional knowledge were within the ambit of sections 102(a)/(b), in a typical case–where the pharma company isolates the active curative compound–there is the issue of whether the prior use renders the compound itself obvious. After Kubin, presumably it is much easier to show as much, but I have not followed the case law on the topic carefully.

There is also the question of whether there would be any actual infringement at all. Based on the hypo, the pharma company can’t patent the herbal remedy itself because they learned of it from the tribe – the pharma company is not the inventor. As Ted said, the pharma company would isolate the curative compound. If someone began to practice the herbal remedy, it is unclear if that practice would be infringement on the curative compound. It would of course depend on the exact scope of the pharma patent claims.

JCJ, good catch on the inventorship issue. There’s another irony inherent in the pharma co.’s patenting of an isolated, presumably “curative” compound. The herb’s curative effect might not be due to an isolable compound, but to a synergistic effect of many constituents of the original plant; or perhaps the concentration of the “curative” compound might need to be much higher than in nature to be effective, in the absence of those other constituents. The pharma co.’s decision of what product to offer in the US will be based not on what’s most effective, but on what’s patentable. That’s hardly unusual in the pharma industry, but is granting such a patent “promoting the Progress of Science and useful Arts”? BTW, nothing in the hypo says that the plant can’t be cultivated in the US.

“PATENTING TRADITIONAL KNOWLEDGE-BASED INVENTIONS : THE POSITION IN MALAYSIA AND SINGAPORE”

The patenting of Traditional Knowledge, Genetic and Cultural Resources is undergoing grave review in light of patenting practice in Singapore and Malaysia.

Traditional Knowledge, Genetic and Cultural Resources are , by all accounts, national assets which must be protected from unfair commercialisation vide patents.

Malaysia which is rich in biodiversity has taken drastic measures to counter biopiracy. The Malaysian Patents Act 1983 is being is being reviewed to align it in tandem with the National Biodiversity Policy 1994(NBP 1994) to ensure compliance and holistic implementation of global environmental governance in the use, access and exploitation of Traditional Knowledge, Genetic and Cultural Resources within the ASEAN region.

……………..
Jeong Chun Phuoc
[Master of Laws,LLM, Faculty of Law, National University of Singapore(NUS), Singapore]
[Bachelor of Laws(Hons), LLB-Hons, Faculty of Law, IIUM,Malaysia]
Senior Lecturer in Law
Pioneer Advocate in Competitive Legal Intelligence(CLI)
and a Pioneer Advocate in Syariah Competitive Legal Intelligence(sCLI)
And
External Expert Consultant
International law firm
he can be reached at Jeongphu@yahoo.com